DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant’s election of Group I, claims 1-13 in the reply filed on July 20, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 14-16 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3, 8, and 9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation 10-30 times by weight, and the claim also recites preferably 15-20 times by weight which is the narrower statement of the range/limitation. Similarly, claim 8 recites the broad limitation 0.5-5 times by weight, and the narrow limitation 1-3 times by weight; and claim 9 recites the broad recitation of at least 2 months, and the narrower limitation of at least 3 months.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 6, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hyatt (EP 3971512).
Regarding claims 1 and 2, Hyatt teaches a method of extracting THC (cannabis-based phytocompounds) comprising:
providing a wort, juice, or tea base, i.e. sugar and water composition;
fermenting with Saccharomyces cerevisiae, i.e. a yeast starter culture; and
adding any strain of ground cannabis “into the fermenting beverage” which encompasses allowing the yeast starter culture, i.e. the Saccharomyces, sugar, and water, to ferment for a first period sufficient to provide a first fermentation medium whereby the Saccharomyces propagate, adding cannabis to the first fermentation medium to provide a second fermentation medium, and allowing the second fermentation medium to ferment for a period to provide cannabis lee comprising cannabis based phytocompounds (abstract and paragraphs 7, 18-19, and 23, and Figure 1).
Regarding claim 6, Hyatt teaches fermentation between 45-100F (paragraph 19), thus the yeast would ferment within the claimed range. The position is further supported as Hyatt teaches the same yeast culture (Saccharomyces cerevisiae) as claimed and disclosed and the properties of an element cannot be separated from itself. Thus, the yeast starter culture of the prior art would ferment at a temperature overlapping that as claimed.
Regarding claim 13, Hyatt teaches that the product may be filtered (paragraph 21) and thus encompasses a step of further isolating the cannabis lee.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 7 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hyatt (EP 3971512), further in view of Wendschuh (WO 2019/010576).
As discussed above, Hyatt teaches a method of extracting THC (a cannabis-based phytocompound) comprising:
providing a wort, juice, or tea base, i.e. sugar and water composition;
fermenting with Saccharomyces cerevisiae, i.e. a yeast starter culture; and
adding any strain of ground cannabis “into the fermenting beverage” which encompasses allowing the yeast starter culture, i.e. the Saccharomyces, sugar, and water, to ferment for a first period sufficient to provide a first fermentation medium whereby the Saccharomyces propagate, adding cannabis to the first fermentation medium to provide a second fermentation medium, and allowing the second fermentation medium to ferment for a period to provide cannabis lee comprising cannabis based phytocompounds (abstract and paragraphs 7, 18-19, and 23, and Figure 1).
Hyatt is silent to the cannabis as comprising flowers of hemps or marijuana as recited in claim 7, or hemp wherein the cannabis lees contain CBD, CBG, and/or CBD-a as recited in claim 10, or wherein the cannabis is marijuana as recited in claim 11, or wherein the cannabis lee further comprises phospholipids as recited in claim 12.
Wendschuh teaches a process for extracting cannabis by teaching forming a fermented beverage which comprises active cannabinoids (abstract). Wendschuh teaches that the term cannabis encompasses both hemp and marijuana, both of which have THC (paragraph 13). Wendschuh teaches phytocannabinoids for extraction including THC, CBD and CBG (paragraph 16). Wendschuh teaches that when it is desired for the beverage to have a psychoactive effect, the beverage must contain psychoactive phytocannaboids, and that such phytocannabinoids are found in a larger concentration in the leaves and flower of the plant (paragraphs 156 and 174). Wendschuh teaches that optionally the process may include the addition of flavoring including toasted or malted hemp seeds (paragraph 252), which contain phospholipids.
Regarding the cannabis as comprising flowers of hemps or marijuana as recited in claim 7, or hemp wherein the cannabis lees contain CBD, CBG, and/or CBD-a as recited in claim 10, or wherein the cannabis is marijuana as recited in claim 11, as Wendschuh teaches that the term cannabis encompasses both hemp and marijuana, both of which have THC, it would have been obvious that the cannabis for THC extraction taught by Hyatt be hemp and/or marijuana. It would have been further obvious to use the leaves and flowers of the plants because they were known to contain greater amounts of THC as shown by Wendschuh, wherein the extraction of THC, and/or other cannabinoids, including CBD would have been obvious in order to provide the desired THC and/or other psychoactive phytocannaboids, such as and including CBD.
Regarding the cannabis lee further comprises phospholipids as recited in claim 12, it would have been obvious for the fermented THC extract of Hyatt to comprise toasted or malted hemp seeds (which contain phospholipids) for flavoring in view of Wendschuh.
Claims 1-8 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Wendschuh (WO 2019/010576).
Regarding claims 1 and 2, Wendschuh teaches a process for extracting cannabis-based phytocompounds by teaching forming a fermented beverage from cannabis which comprises cannabis based phytocompounds, wherein the method comprises:
propagating microorganisms, which are disclosed as being brewer’s yeast, i.e. Saccharomyces cerevisiae; and
multiple fermentations of wort in series, wherein the first stage uses conventional yeast that produces ethanol from glucose, i.e. sugar (abstract and paragraphs 2, 13, 16, 19, 41, 76, 89-90, 152, 174, 220-222, 230, 232 and 235-236).
Regarding claim 1 steps a and b, as discussed above, Wendschuh teaches multiple fermentation stages, as well as propagation of the yeast (paragraphs 235-236). Furthermore, as Wendschuh teaches fermentation of the wort is with microbes, which include brewers yeast which is Saccharomyces cerevisiae (paragraph 236); and that the wort comprises sugar and water (paragraphs 222, 230, and 232), the teachings of Wendschuh encompass or at least make obvious providing a yeast starter culture comprising Saccharomyces cerevisiae, sugar, and water; and allowing the culture to ferment for a first period sufficient to propagate the microorganism, i.e. the Saccharomyces cerevisiae.
Further regarding claim 1, steps b, c, and d, as Wendschuh teaches fermentation of cannabis and multiple fermentation steps, wherein the wort is aerated to provide oxygen for propagation and microbial growth prior to flavor formation and alcohol production (paragraphs 2, 19, and 236), and that flavoring including the flowers and leaves of the cannabis plant can be added for flavoring during the fermentation steps (paragraph 251), it would have been encompassed or at least obvious for the process of Wendschuh to comprise allowing the culture to ferment for a first period sufficient to propagate the microorganism; then adding cannabis, i.e. flavoring, to form a second fermentation medium; and allowing the second fermentation medium to ferment for a period of time to provide for flavor formation and alcohol production, i.e. a cannabis lees comprising cannabis based phytocompounds. The position is further supported as Wendschuh teaches adding cannabis flowers and/or leaves at any time between the kettle brewing process and the end of fermentation (paragraph 174).
Regarding claim 3, Wendschuh is not specific to the claimed limitation. However, Wendschuh teaches adjusting carbohydrate concentration, i.e. sugars, for optimization and consistency (paragraphs 220 and 232). It would have been obvious to adjust the sugar concentration, and thus the ratio of sugar to Saccharomyces for optimization and consistency in view of Wendschuh.
Regarding the first fermentation medium as comprising 0.1-5% v/v of ethanol as recited in claim 4, Wendschuh is not specific to the claimed limitation. However, as Wendschuh teaches propagation in the first stage, followed by ethanol production in the second stage (paragraphs 235-236), it would have been obvious that the first fermentation medium have a lower alcohol content. Furthermore, as Wendschuh teaches that the beverage may contain alcohol or not, wherein alcohol could be adjusted as desired and be in an amount of 0.05-20% by volume (paragraph 151), it would have been obvious for the final product, and the intermediate products which form it, including the first fermentation medium to have a desired amount of alcohol. Thus, the claimed range is considered obvious to one of ordinary skill in the art.
Regarding claim 5, Wendschuh is not specific to the claimed limitation. However, Wendschuh teaches brewing/fermentation times can affect the degree to which hops may affect the flavor of the beverage and that the length of time of exposure to flavoring components may vary depending on the style of beer being produced (paragraph 229) and that the method may occur over any acceptable period of time (paragraph 237). Thus, it would have been obvious for the first fermentation to occur for an amount of time to provide the desired flavor and/or style of beer. Alternatively, as Wendschuh teaches propagation in the first stage, followed by ethanol production in the second stage (paragraphs 235-236), it would have been obvious for the first stage specifically to occur for a period of time in order to achieve the desired degree of propagation.
Regarding claim 6, Wendschuh is not specific to the claimed limitation. However, as Wendschuh teaches the same yeast culture as claimed and disclosed (Saccharomyces cerevisiae) and the properties of an element cannot be separated from itself, the yeast starter culture of the prior art would ferment at a temperature overlapping that as claimed.
Regarding claims 7, 10, and 11, Wendschuh teaches that the cannabis is flowers of hemp and/or marijuana and the cannabis less may contain phytocannabinoids including CBD, CBG, CBD-a, and THC (abstract, paragraphs 2, 13, 16, 19, 41-45, 51,76, 87-90, 134-136, 152, 156, 171-174, and 233).
Regarding claim 8, Wendschuh is not specific to the claimed limitation. However, as Wendschuh teaches the cannabis provides for different flavors and/or effects (paragraph 174), and fermentation of the cannabis (paragraph 2), wherein fermentation is with brewer’s yeast, i.e. Saccharomyces cerevisiae (paragraph 235), it would have been obvious to adjust the ratio of cannabis to Saccharomyces cerevisiae based on the desired degree of fermentation and/or the different flavors and/or effects desired from the cannabis and its fermentation. Thus, the claimed limitation is considered obvious over the teachings of the prior art.
Regarding claim 12, Wendschuh teaches that optionally the process may include the addition of flavoring including toasted or malted hemp seeds (paragraph 252), which contain phospholipids.
Regarding claim 13, Wendschuh teaches that the cannabis lees may be treated through isolation methods including removal of alcohol, filtration and clarification (paragraph 241).
Further regarding the claims it is noted that generally, differences in process conditions, such as concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such conditions are critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Wendschuh (WO 2019/010576), further in view of Iorizzo et al (“Role of Yeasts in the Brewing Process: Tradition and Innovation” 2021 pages 1-16 MDPI Processes https://www.mdpi.com/2227-9717/9/5/839) and Weilenmann, John (“Don’t Throw it Out Ferment it Out! “The Microbiome Project https://www.mcgill.ca/sustainability/files/sustainability/dont_throw_it_out_ferment_it_out.pdf pages 1-66 date from wayback machine of at least October 28, 2021).
As discussed above Wendschuh teaches a forming a fermented beverage through a process for extracting cannabis based phytocompounds comprising: allowing propagation of the microorganism which is selected from a group including brewer’s yeast, i.e. Saccharomyces cerevisiae; and multiple fermentations of wort in series, wherein it would have been encompassed or alternatively obvious to have a first fermentation medium and a second fermentation medium.
Wendschuh is silent to the second fermentation medium as fermenting aerobically for up to 5 days followed by fermenting anaerobically for at least 2-3 months.
Wendschuh teaches fermentation of cannabis and multiple fermentation steps, wherein the wort is aerated to provide oxygen for propagation and microbial growth prior to flavor formation and alcohol production (paragraphs 2, 19, and 236). Wendschuh teaches brewing/fermentation times can affect the degree to which hops may affect the flavor of the beverage and that the length of time of exposure to flavoring components may vary depending on the style of beer being produced (paragraph 229). Wendschuh teaches the method may occur over any acceptable period of time, wherein 3-28 days for alcohol formation and 3 days to 2 years for aging is exemplified (paragraph 237).
Iorizzo et al (Iorizzo) teaches the role of yeast in brewing, and that under anaerobic conditions the yeasts convert pyruvate to ethanol and CO2, and that in aerobic conditions, yeasts consume sugars, mainly for biomass accumulation and CO2 production (title and Introduction paragraph 3).
Weilenmann, a text on fermentation, teaches in forming a fermented beverage, i.e. kombucha, two phases are used, first an aerobic fermentation, and then an anerobic fermentation wherein flavors are added and carbonation of the beverage occur (page 57 last paragraph, page 58 first paragraph, and page 59 first paragraph).
It would have been obvious for the process of Wendschuh to specifically include both an aerobic and an anerobic fermentation for different functions of ethanol, biomass, and CO2 production as taught by Iorizzo. As there are a limited number of process orders, i.e. either anaerobic and then aerobic, or visa versa, the claimed order is considered obvious. Alternatively, to first have aerobic fermentation is considered obvious as Wendschuh teaches aeration of the wort, and/or as Weilenmann shows it was a known process order when producing fermented beverages. To select from a limited number of options and/or to use a known order for fermentation would have been obvious to one of ordinary skill in the art.
Further regarding the time of each respective process, it would have been obvious that the method occur over an acceptable period of time, including from days to years as taught by Wendschuh. It would have been further obvious for each respective stage to occur for an amount of time to provide for the desired degree of ethanol, biomass, and CO2 production in view of Iorizzo and/or flavor in view of Wendschuh. Thus, the claimed ranges are considered obvious over the teachings of the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Explore Yeast “What is Yeast” pages 1-5 printed September 2026 https://www.exploreyeast.com/what-is-yeast/is-yeast-aerobic-or-anaerobic/ evidences that Saccharomyces cerevisiae is referred to as baker’s or brewer’s yeast (page 3).
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792
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